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List Firm Proceeds With Typo-Squatting Litigation

Since the last of the typo-squatting URLs registered by Act One Mailing Lists Inc. was disabled, it appears that only one of the affected list firms intends to move forward with litigation.

On Jan. 17, Act One registered 67 domain names, 11 of which were similar to the Web addresses of competitors, including Dunhill International List Co. Inc., Edith Roman Associates Inc., Fred Woolf List Co. Inc., Lifestyle Change Communications, Lighthouse List Co., The Listworks Corp., Marketing General Inc., Marketing Information Network (mIn), MSGi, PCS List & Information Technologies and SRDS.

While the URLs were active, a typing error could have sent list seekers to Act One's Web site instead of the site for which they were looking. For instance, PCS' Web site is www.pcslist.com, but typing in www.pcslists.com went to Act One's site. Act One president/CEO Steven M. Cushinsky said he learned of the situation May 24, when he received a cease-and-desist letter from MSGi.

On May 31, Cushinsky sent paperwork to Register.com to release the offending domain names back into circulation. He claimed that the domain names were registered by a former employee of the firm in what he referred to as an aggressive marketing tactic.

The practice of setting up camp on the Internet under a domain name that is similar to an existing domain name is called typo-squatting, said Marc Roth, an Internet marketing attorney at Brown Raysman Millstein Felder & Steiner LLP, New York.

PCS List & Information Technologies filed a cease-and-desist letter on June 1, and company officials said they intend to proceed with litigation against Act One for damages even though the URLs were disabled.

“It's hard to say what the potentially lost business is worth in dollars, but we think it's the principle of the thing,” said Ann Guyer Healy, CEO of PCS List & Information Technologies, Peabody, MA.

However, it may be difficult for PCS to prevail if none of the other affected firms files suit.

“The anti-cybersquatting law prohibits a company from using or registering a domain name that is intended to confuse consumers,” Roth said. “If several entities can demonstrate that one common entity registered domains, all of which are similar to actual companies in the same industry, and the site that they created provides the same product or service as those entities, I would think you have a pretty good case for mal intent.”

At this point, the likelihood of the other firms suing Act One is unknown.

At least one company involved is content with the resolution of the situation.

“I talked to Steve Cushinsky. He was very apologetic, he explained the situation and that the URL would be taken down — and SRDS is fine with that,” said George Carens, vice president of marketing at SRDS, Des Plaines, IL.

Another firm is still weighing its options.

“At this point we're monitoring how PCS proceeds. Our attorney has sort of steered us away from pursuing a suit at this time,” said Eric Woolf, vice president at Fred Woolf List Co. Inc., White Plains, NY. “If we feel there is something that can be done, we may still consider a suit.”

Meanwhile, Cushinsky is optimistic that the situation will be resolved soon.

“I only know of one company that is trying to move forward,” he said, “but we're trying to come out of the situation amicably.”

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